FAQs – Trademarks and Business Names Rights

FAQs about trademarks and business names rights

Some answers to frequently asked questions about registered trademarks and business names are detailed below. These FAQs are based on our experience of the questions that our customers commonly ask us. BATTLE welcomes genuine faqs from genuine trademark owners. If your question is not answered below please contact us and we should be able to provide you with personalized answers, tailored to your business needs.

Trademark rights are extraordinary

Trademarks are not ordinary. Countries are prepared to give extraordinary rights to owners of trademarks. This is to encourage investment in branding, and in being able to provide assurances of genuine sources of origin for consumers. Trademark laws are based on such principles.

See BATTLE’s FAQs to obtain some answers about rights to trademarks

General Trademark Registration Questions

What is a registered trademark?

A registered trademark is an exclusive property right obtained by registration of the trademark under the laws of the country where the trademark is used.

How do I register a trademark?

Registered trademarks are obtained by submitting a formal application for registration under the laws of the relevant country. To obtain a registered trademark, there are certain requirements that must be met by the application. BATTLE are experts in assisting with the registration process efficiently for our clients. Some basic aspects that must be considered when registering a trademark include the following:

Trademark registration legislation is based on the current trademark law in the country concerned.

In the EU, trademark regulations apply to member states, and national law applies in each country.

Trademark legislation in the Republic of Ireland is similar in many respects to UK trademark law and practice, and also to trademark laws in several other countries and the EU.

BATTLE specialises in helping all businesses protect their business names, we register trademarks for sole traders, proprietors, organizations, partnerships and companies, and many more.

What trademarks can be registered?

A trademark can be registered if it is a sign that can be represented graphically and which is capable of distinguishing the goods and services of one undertaking from those of other undertakings.

Logos, brands or signs can all be registered as registered trademarks once they meet the legal requirements for trademark registration.

How should I protect my business name?

You can protect your business name when you register a trademark. Once a trademark is registered, it cannot be used by any other party for similar goods/services without the consent of the owner of the trademark.

Owners of business names can obtain for trademark registration to protect and secure their names, brands and logos. Countries adopt laws for trademark registration to legally grant exclusive rights to enable entrepreneurs to protect business names officially. To protect your business name by trademark registration, certain legal requirements must be met, to be eligible for registering a trademark.

What is the difference between registering a trademark and registering a business name?

In the Republic of Ireland, businesses are required to register their trading or business names under the Business Names Registration Act. Business owners do not get any brand protection or name protection under this legislation. nor do they obtain any right to legally sue for trademark infringement.

In order to effectively and legally protect your business names, logos or brands they must be registered as trademarks.

The main difference between registering your business name and registering a trademark, is that trademark registration is similar to registration of title in property. It confers significant and powerful rights to owners of trademarks and allows trademark owners to defend their business name, logo or trademark against any infringements.

How long does trademark registration last?

A registered trademark can last forever (assuming it is used continuously in trade), but the first registration usually lasts 10 years. Registered trademarks are renewable indefinitely for successive 10 year periods on payment of renewal fees but you should be aware that this may vary for certain countries, such as the United States.

What can a registered trademark consist of?

A registered trademark can consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. There are certain exclusions that may block a registered trademark, where the term may be in common use in the trade, or where the trademark refers, inter alia, exclusively to the quality of the goods or services.

Can the same trademark be registered in more than one country?

Once a trademark is registered it applies throughout the territory of the country of registration, for the goods and services specified. It is possible to extend the trademark registration from your home country to other countries where you intend to use the trademark. International trademark registration should be considered at the time of initial registration because if a similar trademark is registered before your trademark it may hold prior, and over-riding, rights.

The Republic of Ireland, Great Britain and the EU are parties to the Madrid Protocol for the international registration of trademarks.

The Madrid Protocol makes it possible to designate additional countries for your trademark over time, providing that there is no other prior or similar trademark registrations in those countries involved. For a list of countries where the Madrid Protocol applies, please visit our international trademarks page.

The scope of protection of an EU trademark applies in countries which are member states of the European Union. When a country leaves the EU, unless agreed otherwise, national marks of that country may cease to hold the power to oppose, revoke or invalidate EU trademarks. Further, EU trademarks may not cover that territory, unless agreed otherwise.

General Trademark Rights Queries

What rights does a registered trademark confer to its owner?

The owner of a registered trademark has exclusive rights to the trademark. This means that whatever the trademark registration includes cannot be used by any other party in the specific area of registration without the owner’s express consent.

Can I make a partial or limited transfer of a registered trademark?

An assignment or other transmission of a registered trademark may be partial. BATTLE can advise you further on this.

When do the rights of a registered trademark take effect?

The rights of the owner of a registered trademark shall have effect from the date of registration. In most cases priority ensues from the date of application.

What is the nature of a registered trademark?

A registered trademark is personal property. For a business, it constitutes part of the assets.

Can a registered trademark be sold, transferred or assigned?

A registered trademark is transmittable by assignment, testamentary disposition or operation of law in the same way as other personal property, and shall be transmittable either in connection with the goodwill of a business or independently.

“JAGUAR” is a registered trademark for cars, can I register it as a trademark for watches?

In 2006, the High Court in the Republic of Ireland dismissed a claim by Jaguar Cars to prevent the registration of a similar trademark for watches. This was because trademarks are registered only for the goods and services specified at the time of application for trademark registration, and in use thereafter. Watches technically belong to a separate classification under the Nice Classification system, and the High Court held that it was possible for another business to register the trademark “JAGUAR” for watches.

Trademark Licensing

Can you sub-licence a registered trademark?

Yes, unless the licence provides otherwise, a sub-licence may be granted by the licensee.

Is a licence of a registered trademark binding?

Yes, unless the licence provides otherwise, it shall be binding on a successor to the grantor’s interest.

Can a registered trademark be licensed?

Yes. A license to use a registered trademark can be general or limited.

How is a licence of a registered trademark effective?

A registered trademark licence is not effective unless it is in writing signed by or on behalf of the grantor and this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

Trademark Queries

How do I recognise a registered trademark?

Once registered, the owner of a registered trademark is entitled to use the symbol r in a circle for the registered trademark, e.g. BATTLE ®. It is not obligatory to use the ® symbol but it denotes a registered trademark.

How many registered trademarks can my business have?

A business can register as many trademarks as it requires. Some businesses do not use a trademark in advertising or on packaging until it has been registered. This is to ensure the registered trademark is fully protected so that others cannot copy it. It is important to note that the registered trademark must be used in trade within 5 years of the application in order to retain your rights.

Can my trademark be opposed by others?

Assuming an application to register a business name as a trademark passes through the initial phases involved in trademark examination, by way of rectification and observation, it moves to being published. The trademark application is then open to objection from third parties, for a limited period of time.

Third parties can oppose applications to protect their own brands and trademarks, depending on the circumstances. BATTLE can assist you with any opposition proceedings you may face. Once any oppositions have been successfully resolved, the trademark then progresses towards formal registration (subject to the payment of relevant fees). In some cases, opposition can prevent the trademark from being registered. Visit our trademark opposition page for further information.

Are applications to register a trademark examined?

When an application is made to legally register a trademark, the trademark is examined from a number of aspects to ensure that it conforms to the legislation. BATTLE can assist you in preparing your application to help it pass the examination. We offer advice on the technical aspects of the trademark procedures prior to making an application to make sure that the registration process is as easy and straightforward as possible for all of our customers.

What goods and services does a registered trademark apply to?

For the purposes of trademark registration, goods and services are classified according to a prescribed system of registration. Every trademark is registered in respect of particular goods and services or in respect of classes of goods or services.

Can I register my brand or logo as a business name and then no one else can use it?

No. Registered trademarks are much more powerful than registered business names. Different laws govern business names and trademarks. For example, under business name law the location of a business is recorded, but it does not block duplication of the name. In contrast, the laws for registered trademarks give strong rights and powers to the owner of a registered trademark.